of the supply of whisky which they had on hand for their own use, and did this in flo spirit of accommodation, they could not be said to be engaged in the business, even if they received money for this accommodation. U. S. v. Jackson, 1 Hughes, 532. In answering this question, you need not be influenced by the fact that no proof has been given that the defendants had no bar-room, nor the usual appliances of retail liquor dealers, although stress was laid upon this in the case in Hughes. The cases which you have heard during this term show that the favorite mode of violating this law is by going about the country with a wagon, and by selling whisky out of a tin cup or by the bottle. Perhaps the best explanation of the term "being engaged in the business" is this: When a person has procured spirituous liquor with the intent to sell it out again in small quantities to anyone who may apply for it, or, having it on hand, determines to sell it out to any one who may apply for it, he must pay the special tax. If does not, his attempt to carry out his intent is a violation of the law, for he is engaged in the business of retail liquor dealer without having paid the special tax.
(District Oourt, No D. Ohio. June Term, 1BB6.)
INTERNAL REVENUE LAWS-SELLING LIQUOR AND TOBACCO WITHOUT A LICENSE -INDICTMENT-MISJOINDER-REV. ST. U. S. 1024.
Section 1024, Rev. St. U. S., providing that when "there are several charges against any person for two or more acts or transactions of the same class of crimes or offenses, which may be properly joined, instead of having several indictments, the whole maybe joined in one indictment, in separate counts," does not alter the common-law rule that the accused shall not be tried at the same time for different offenses; and an indictment charging the accused, in one count, with carrying on the business of a retail liquor dealer without having paid the special tax, and. in another, with dealing in manufactured tobacco without payment of the special tax, will be quashed.
Indictment. R. S. Shields, Dist. Atty., for the United States. Harvey Scribner and L. B. Peasly, for the defendant.
The indictment charges four separate offenses: (1) That the defendant carried on the business of retailing liquor without posting in his place the stamp denoting the payment of the special tax required by law; (2) that he carried on the said business without having paid the special tax required by law; (3) that he carried on the business of dealing in manufactured tobacco without posting in the place the stamp denoting the payment of the special tax required by law; (4) that he carried on the said business without having paid the special tax required by law. , The first and third offenses are charged under section 3239, Rev. St. U. S., and are misdemeanors punishable by fine. The second offense is charged
STATES V. GASTON.
under section 3242, Rev. St. U. S., as amended by Supplement, 132, § 16, and is a felony punishable by fine and imprisonment. The fourth offense is charged under section 3242, Rev. St. U. S., as amended, and is punishable by fine. Rev. St. U. S. 1024, does not change the common law; and where two crimes charged are subject to different punishments, although they are connected and committed in pursuance of the same object, they cannot be joined in the same indictment, and an indictment charging these offenses in separate counts is bad for misjoinder. U. S. v. Scott, 4 Biss. 29; Whart. Crim. Law, § 205; Peuple v. Liscomb, 60 N. Y.560; Young v. Rex, 3 Term R. 98; State v. Fowler, 8 Fost. 184; State v. Lincoln, 49 N. H. 465; 1 Bish. Crim. Proc. 205-213; State v. Porter, 26 Mo. 201; Hampton v. State, 8 Humph. 69; Mc(}regg v. State, 4 Blackf. 101; Baker v. State, 4 Pike, 56: Kane v. People, 8 Wend. 203; U. S. v. Pirates, 5 Wheat. 201: State v. Canterbury, 28 N. H. 216: State v. Flye, 26 Me. 312; State v. Ma1'Vin, 35 N. H. 26; Whart. Crim. Law, 204-207; 1 Archb. Crim. PI. 95; Rex v. Trueman, 8 Prid. & C. 127; Reg. v. Berry, 4 Falc. & F. 389: Reg. v. Burch, Id. 407: In re MU1-phy, 8 Car. & P. 297; Rex v. B1'itton, 1 Moody & R. 297; O'Connell's Case, 11 Clark & F. 374; King v. Roberts, Carth. 226; King v. Clendon, 2 J..d. Raym. 1572; S. C. 2 Strange, 870: McArthur v. Jamieson, Sess. Cas. 24: Rex v. Berifl,eld, 2 Burr. 980; Young v. King, 3 Term R. 105.
WELKER, J. This indictment contains, in separate counts, two distinct offenses, the penalty in each offense being different from the other. As a retail liquor dealer he must be imprisoned as a part of the penalty, and as a dealer i,n manufactured tobacco he may be imprisoned, and the minimum fine is different. These offenses are, besides, separate and distinct transactions, and not of the same class of crimes or offenses that may be joined under section 1024 of the Revised Statutes. The motion is therefore sustained. v.28F.no.16-54
ROYER V. SCHULTZ BELTING CO. 1
(Oi'l'euit 0011,'1'1, E. D. Missouri.
October 4, 1886.)
PATENTS FOR INVENTIONS-INFRINGEMENT OF COMBINATION CLAIM:.
A patent for a combination is not infringed by the use of less than the en· tire number of elements claimed.
SAME-ExTENT OF CLAIM.
Where a part of a machine covered by a combination patent is described in a claim as having a certain motion, that motion, as distinguished from the means of producing it, is not covered by the claim.
Letters patent No. 77,920, on a machine fo'r treating hides, held not infringed by a machine differing from the one thereby patented in being horizontal instead of upright, using two followers instead of one, and springs instead of a weight, and in having a shaft to which the hides are attached by means of a clamp instead of a slotted shaft, with set-screws.
4.SAME-kCTION AT LAW-DEMURRER TO EVIDENCE.
Where, in the trial before a jury of a suit at law for the infringement of a patent, the plaintiff introduces evidence to show infringement, and closes that branch of his case, and the defendant demurs to the evidence. it is the province of the judge to decide whether or not the plaintiff has made out a prima facie case of infringement, and, if of the opinion that he has not, he should charge the jury to find for the defendant.
At Law. Action for damages for the infringement of letters patent No. 920. granted to Herman and Louis Royer, May, 12, 1868, for animproved machine for treating raw hides for belting, etc. The essential features-of the machine described in the specification of the plaintiff's patent are (1) a vertical cylindrical cage, the bars or rollers of which are rounded on the inner. face, and are attached immovably at both ends to rings; (2) a vertical slotted shaft, passing down through the center of the cage, arranged so· that it may be turned either way, and having set-screws by means of which the ends of hides may be secured in the slot; (3) a grooved weight or follower, fitting the corrugations of the cage, by which it is prevented from turning, and pierced by the shaft, upon which it is left free to slide up and down. The operation of the machine is as follows: The end of the hide is secured in the slot of the central shaft, which is then revolved, winding the hide tightly thereon. The rotation is then reversed, and the hide uncoiled, doubled back, and recoiled in the other direction; stretching it, and roughing its surface. The weight rests npon the hide, and condenses it by lateral pressure as it is lengthened. Motion is communicated to the shaft by means of an arrangemtlnt of pulleys, shafts, and beveled wheels. The claims of the patent are as follows: "(1) Tbe vertical shaft, B, with a slot, Bl, and set screws, b, b, b; said sbaft baving a forward and back motion, substantially as and for the purpose described.
by Benj. ]'. Rex,
of the St. Louis bar.
ROYER V. SCHULTZ BELTING CO.
"(2) The pins or rollers, C, C, C. set in the rings, D and Dl, together with the grooved weight, I, substantially as and for the purposes described." The defendant's machine is constructed in accordance with the specificationof letters patent No. 177,576, granted May 16, 1876, to J. A. J. Shultz. In it a closed horizontal cylinder, with rounded ribs, arranged longitudinally inside of the case, is substituted for the plaintiff's upright open cage. Instead of a slotted shaft, with set-screws, the defendant uses a shaft provided with a clamp; and, instead of a vertical weight or follower, uses two horizontal followers, pressed towards the center by means of springs arranged so that their tension may act automatically. The case was tried before a jury. After introducing evidence showing that the defendant is using a machine like the one above described, and evidence tending to show that the devices therein substituted for those used in the plaintiff's machine are the mechanical equivalents of the latter, the plaintiff closed his case as to infringement, and was about to proceed to the question of damages, when the defendant interposed a demurrer to the evidence, and requested the court to instruct the jury that the plaintiff had not made out a prima facie case of infringement, and that they must therefore find for the defendant. M. A. Wheaton and Broadhead d; Haeussler, for plaintiff. Krum d; Jonas, for defendant.
TREAT, J., (charging jury orally.) It must be borne in mind in all of these cases that the party is not patenting a principle, or, in other words, a result to be produced, but he is patenting machinery by which that result can be produced. This is a combination patent, divided into two claims, and in the present stage of the inquiry the question is whether the defendant uses either of these combinations. The explanatory part or specifications indicate the function or office to be effected by the plaintiff's special mechanism. The first is the "vertical shaft, B, with slot, B 1, and set-screws, b, b, the shaft having a forward and backward motion, substantially as and for the purposes described." That forward and backward motion is no part of the invention, but is a mode of producing a result. The party does not claim, and evid.ently could not do it, the pulleye, shafts, and beveled wheels to make the forward and back motion, as they are common mechanical contrivances. Now, what is his invention? It is a vertical shaft, with a slot and set-screws, under such conditions, as explained therein, that it may be moved backward and forward. The ordinary doctrine in law concerning patents is that if a party insists on a patent for a combination of devices, (whether new or old is immaterial,) each element of the combination is an essential element; so that one who uses a combination in some respects, but omits one of the elements that the patentee chooses to describe as essential, the supposed infringer does
not infringe. The patentee is supposed to describe clearly and fully all the elements which he thinks essential to produce the result desired. If he chooses to crowd his supposed inventions or combinations with elements that have no functions whatsoever, and a party chooses to use a like contrivance, omitting some of those elements, he does not infringe. The reason of the rule, as explained by the supreme court verJ' frequently, is this: that-First, a party claiming a patent should not incumber the combination or device with matters that are wholly unessential, and thereby block the path of improvement or invention. If he chooses to put such in his contrivance, he must abide by the result. Now, what is the essential element of this first claim, in the light of the specifications stated? A vertical shaft, with a slot and setscrews, with such contrivances attached thereto that this central shaft may move backward and forward for the purposes stated in the specification. Is there a slot, or an equivalent thereto, in the defendant's machine? If there is anything of that description, falling within the doctrine of mechanical equivalents, he violates the first claim. It seems he has omitted the slot altogether. Without the slot, as this patent is described by the plaintiff, there is nothing new and nothing of the slightest importance connected with it. It would be the commonest thought of anyone, if he wished to make a coil, that he must fasten the end somehow before he begins to coil. There is a variety of devices for that purpose, and very simple. One would be set-screws; but set-screws, according to the theory of the patent, were not adequate. Therefore he wanted a slot as connected therewith, and, so far as I can discover, the defendant uses no slot at all. 'The second claimMr. Wheaton. If your honor will pass that until the model comes, we will show your honor there is a slot in the defendant's machine as plain as can be. The Court. That is what you have been trying to do for two or three days. The second claim is this: "The pins or rollers, a, a, a, set in rings, D and Dl, together with a grooved weight, substantially as described." Now, the fact that the defendant uses a machine horizontally instead of vertically would not excuse him from the allegation of infringement; but, first, we must know what is the defendant's claim in that particular. For the purpose of compression on the edges of the coil he has a vertical contrivance, the lower disk being firm, and the weight above moving in proper grooves, and an opening for the shaft, so that it may move up and down, according to the necessities of the pressure. We heard testimony to show that the plaintiff's contrivance requires more than the weight of the upper disk, or, as he calls it, the grooved weight,!. Practically it was of very little moment. The weight was to be varied, and the patentee himself, on the stand as a witness, says, without any particular amount of weight; because
V. SCHULTZ BELTING CO.
somebody bad suggested, which is not indicated in his patent at all, that the pressure might be produced by an external contrivance, irrespective of such weight. Now, if somebody has invented what would be improvements merely, the defendant supposed to infringe may be an improver, but he is none the less an infringer. Herein the court is reduced to the necessity of determining, first, has this defendant used the patentee's contrivance as indicated in claim 2, or a mechanical equivalent therefor. It appears that the defendant, placing his contrivance horizontally, instead of trusting to gravity Under ormerely, with the weight itself on one end, used dinary modes operating a spring may effect precisely the same result as a small vertical weight. But what does the defendant do? He has a contrivance which in many particulars differs very essentially from the plaintiff's mode of operation. No slot,-no vertical pressure; a coiling process (in that respect like the patentee's) by which a like result may be produced with an essential element of the combination omitted. When I say "omitted," I mean that the function of the spring may be the same as the weight.. But there are other elements of the combination: the pins or rollers, rings, the upper end and the lower fixed, operating in the manner which he has described. Without proceeding further with regard to the matter, I have indicated, in a general way, the views the court entertains in respect to the question under investigation. The only difficulty that has been presented to my mind in regard to the matter is with reference to the doctrine supposed to be laid down in 18 Wall. in the case cited, whether the court, instead of presenting these matters to the jury, should undertake, at this stage of the inquiry, to determine the question for itself. That case in 18 Wall. is familiar to the profession. I suppose it is also familiar that since then there have been at least four or five decisions by the supreme court modifying that doctrine essentially. In other words, in the course of a trial before a jury, the plaintiff having closed, the court is at liberty at that stage of the case to instrnct a verdict for the defendant; and that is exactly like this case, and the instruction will be accordingly.